Thursday, 12 March 2015

Opinions & Revocation

Since 1 October 2014, when section 16 of the Intellectual Property Act 2014 came into force, amending section 73 of the Patents Act 1977, it has been possible for the comptroller to revoke a patent following an opinion finding the patent to lack novelty or inventive step. This has substantially extended the comptroller's power to take action on his own initiative, which previously was only possible to prevent double patenting. Under the law as it stood prior to October 2014, the only other way to get a patent revoked would be to apply for revocation, either to the patent office or the court. Applying for revocation, however, is a tricky business and can lead to all kinds of complications, not least of which are high costs to pay for lawyers, together with potential exposure to at least some of the other side's costs if the case does not go your way. It is therefore not something to be taken lightly, even if your case seems to be watertight and the patent clearly invalid.

Under new section 73(1A)-(1C), if an opinion is issued that finds a patent to be not novel or to lack inventive step, the comptroller may revoke the patent. He must, however, wait until the patent holder has had an opportunity to request a review of the opinion, which can be done within 3 months of the opinion issuing, and cannot proceed until any review, and any subsequent appeal, has been disposed of. If, of course, the review finds the opinion to be wrong, it will be set aside and no action will be taken.

Once the comptroller decides to take action to revoke the patent, he has to give the patent holder an opportunity to make any observations and to amend the patent. Importantly, this procedure happens only between the Patent Office and the patent holder. The person who made the request for an opinion is no longer a party to the proceedings. They can, however, oppose any amendments requested under section 75, which are always advertised before they are made (although typically with a very limited 2 or 4 week period to file any opposition).*

The upshot of all this is that a person who has what they think is a solid case for knocking out a patent in the UK now has potentially an entirely risk-free way of getting rid of the patent by simply requesting an opinion on validity and waiting to see what happens. If the examiner agrees with the requester, the patent could then be knocked out, or at least amended, without any further action needed by the requester of the opinion and with no potential for a costs decision being made against them (even if the patent is only limited and not revoked in full). For those who do not want to get into an expensive procedure just to get rid of an inconvenient, but clearly invalid, patent, the new law seems to be a very good option indeed.

At the moment, we do not yet know how the new procedure will work in practice. The IPO have indicated that they will only act "in clear-cut cases where the patented invention clearly lacks novelty or an inventive step". What does "clear-cut" mean though? What is the difference between a patent lacking novelty and clearly lacking novelty? We may find out over the next few months, as two opinions have now issued that have found patents to lack novelty and inventive step.

The first of these, Opinion 23/14, was requested on 24 October 2014, and issued on 21 January 2015. The request was made regarding validity of GB2493904, granted to Actegy Limited and relating to an "apparatus for electrical stimulation of a foot" (or more likely a pair of feet, as seems to be clear from the illustration of the product shown on the right, and available here). The examiner found the patent to be not novel over published Chinese utility model CN200973920Y relating to a "foot-care and body-beautifying machine with electromagnetic waves". According to Rule 98(1), the patent holder has until 21 April 2015 to request a review of the opinion. If no review is requested, or if any review does not result in the opinion being set aside, the comptroller may decide to revoke the patent.

The second is Opinion 25/14, which was requested on 13 November 2014 and issued on 11 February 2015. The request was made regarding validity of GB2497956, granted to J. C. Bamford Excavators Limited (more widely known as JCB, famous for making machines like the one shown on the left) and relating to a hydraulic system with kinetic energy recovery and storage device. The examiner found that the independent claims of the patent were not novel over US3485037 and were obvious over other documents cited by the requester. The patent holder has until 11 May 2015 to request a review.

In each case, the examiner's finding seems to be pretty clear in finding a lack of novelty of at least the independent claims of the patent. If the opinions are not set aside following a review, I would have difficulty seeing how either case could be anything other than "clear-cut" cases where revocation under section 73(1A) would be inevitable. We will, however, have to wait and see to find out whether the comptroller agrees.

*This turns out not to be correct. Any amendments made as a result of objections under section 73 are not advertised and are not subject to opposition. Only proposed amendments under sections 75 and 27 are advertised.

3 comments:

One interesting (to me at least) aspect of Opinion 23/14 is that the principal citation is a Chinese utility model. My understanding is that an ever increasing number of applications for utility models are being filed in China. Hence, Chinese utility models are becoming a large, and important, body of prior art, particularly, I suspect, for use in attacking non-Chinese language patents post-grant (assuming that they may be under-cited as relevant prior art by patent offices outside China). I wonder whether there is any research or data to support or refute this supposition.

Interesting that the examiner did not tackle any of the dependent claims, despite the requester doing what looked like a pretty thorough job of going over them.

"Having considered the independent claims, in view of the large amount of prior art included in the request I do not consider it appropriate to consider the novelty and inventiveness of each of the other 31 dependent claims."

I suppose there is a limit to what one can expect for an official fee of £200. It is actually great value for money: 18 pages of reasoned arguments from what looks like an experienced examiner. Bargain.

About Me

Tufty the Cat is the nom de chat of UK and European patent attorney David Pearce (LinkedIn profile). Anything written by Tufty should not be taken as constituting legal advice, and no responsibility is taken for anything you might do as a result.